When is a Domain Name Considered a Trademark? (as applied to genTLD)
As the Internet becomes more and more commercialized, turf wars over domain names and uses of trademarked names on the web have become commonplace. With the advent of the Anticybersquatting Consumer Protection Act and the implementation of the Uniform Dispute Resolution Policy (UDRP) by the Internet Corporation for Assigned Names and Numbers (ICANN), trademark owners have taken domain name speculators, cybersquatters and even good-faith domain name users to court and to arbitration to determine trademark rights.
One question that is often overlooked, however, is a basic one: What trademark rights does an owner have in a domain name?
In an effort to answer this basic question, we must have a fundamental understanding of trademark law — what marks are accorded trademark protection and what that protection entails — before we can extrapolate to the “dot-com” realm.
Trademark Law In a Nutshell
A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. Trademarks identify one seller’s goods and services from those of others and signify that all goods bearing the same mark come from the same source and are of equal quality.
A mark can only be found to have trademark significance if the mark is “distinctive.” There are four types of marks:
- Arbitrary or fanciful marks — those that are “made up” or are used with unrelated goods (such as XEROX, or AMAZON for a bookstore);
- Suggestive marks — those that suggest but do not describe the goods and services (such as GIGALAW for an online provider of legal information);
- Descriptive marks — those that describe the goods and services (such as NATIONAL BOOK OUTLET for a bookseller); and
- Generic marks — marks that consist of the common name for a good or service (such as FREE CHECKING for a no-fee checking account).
Arbitrary, fanciful and suggestive marks are considered inherently distinctive. Descriptive marks may be considered distinctive if the trademark holder can show “secondary meaning” — that the public associates the mark with that owner’s goods and services. Generic marks are never distinctive.
Trademark laws are essentially consumer protection laws. State and federal trademark laws exist to protect consumers from confusion in the marketplace. A later user of the same or similar mark infringes a trademark if the use is likely to cause confusion as to source, affiliation, connection or sponsorship. No actual confusion is required.
Because of the “likelihood of confusion” standard, the same trademark can be used on different goods and services by different users. For instance, separate federal trademark registrations can coexist for ABC for cosmetics, illuminated display signs and broadcasting services. Even though each of these trademark owners is using the identical mark, there is no likelihood of confusion in the marketplace; it is improbable that a consumer would buy ABC cosmetics based on her assessment of the quality of Peter Jennings’ newscast on the ABC television network.
The U.S. Patent and Trademark Offices divides goods and services into 42 international classes to assist in defining the scope of exclusive ownership of a mark. These classes only serve as guidelines, however. A likelihood of confusion may exist between goods in different classes, and, conversely, there may be no likelihood of confusion between goods in the same class.
A mark need not be registered to be protected under state and federal trademark laws. Rights in a mark arise from use, not registration. However, federal registration of a mark gives the owner constructive nationwide use of the mark as of the date of filing. Therefore, the registration of a mark gives notice to any subsequent users that the registrant has superior rights in the mark.
Domain Names as Trademarks
Determining if a domain name should be accorded trademark significance is as simple as applying the basic principles.
Is the Domain Name Used as a Trademark?
The first and most important inquiry is whether the domain name is actually used as a trademark. That is, does the domain name function as a source identifier?
A domain name that simply serves to identify the user’s location on the Internet does not function as a source identifier, only as an address. For instance AMAZON.COM serves as a source identifier, and not merely an address, as the name of the company and the name on the web site is AMAZON.COM.
Conversely, my law firm’s web site is accessible by the domain name www.barw.com. If you go to that address, you will see the home page for Bradley Arant Rose & White LLP. The domain name only serves as an address where you can find my law firm on the web, and therefore it does not serve as a source identifier.
Is the Domain Name Distinctive?
If a domain name is used as a source identifier and not an address, then we look to the basic inquiries outlined above. If the domain name is simply a descriptive or generic term combined with a top-level domain, the domain name fails the test for distinctiveness.
For example, if I owned an online bookseller called NATIONALBOOKOUTLET.COM, I am actually using the domain name as a source identifier; it is the name of my company. However, the mark is descriptive, and therefore it will not be accorded trademark protection.
What Does it All Mean?
Whether you can claim trademark protection for your domain name is not always a critical issue. The vast majority of trademark disputes relating to domain names pertain to the use within a domain name of a term that is identical or confusingly similar to a trademark.
For instance, although the World Wrestling Federation does not use WORLDWRESTLINGFEDERATION.COM as a source identifier, the domain name does contain its registered trademark WORLD WRESTLING FEDERATION. As such, the WWF was able to obtain a transfer of the domain name under the UDRP from a cybersquatter with no rights in the name WORLD WRESTLING FEDERATION.
Likewise, the company that owns the Benihana of Tokyo restaurant chain has a federally registered trademark in BENIHANA OF TOKYO. Even though it doesn’t use BENIHANAOFTOKYO.COM as a source identifier, it was able to wrest the domain name from an individual who had registered the name in bad faith.
Therefore, for example, if you are a trademark owner of the mark MYTRADEMARK, you do not have to use MYTRADEMARK.COM as a source identifier in order to protect that domain name from use by others. If another person or entity registers the domain name “mytrademark.com,” but has no legitimate interest in the trademark MYTRADEMARK, or has otherwise registered the domain name in bad faith, you should be able to obtain transfer of the domain name back to you. It is not essential for you to have trademark rights in the entire domain name to protect your rights in that domain name. It is adequate to have rights in the second-level domain (the part preceding the “.com”) to be able to obtain transfer of the domain name to you from a bad faith registrant.
The differences in asserting trademark ownership over an entire domain name and ownership of the second level domain are subtle and a bit esoteric. It is an important distinction to make, however, in light of the increasing numbers of “dot-com” trademark applications.
After Margaret Smith Kubiszyn
Source: IMENA.com.ua
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